The State of the Netherlands v. Goldnames, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The State of the Netherlands v. Goldnames Inc.

Case No. D2001-0520

1. The Parties

The Complainant is The State of the Netherlands. The Complainant is represented

by Dr. H.J.M. Boukema of Pels Rijcken & Droogleever Fortuijn of The Hague,

Netherlands.

The Respondent is Goldnames Inc. of New York, NY, United States of America.

The Respondent has filed no Response and is not represented.

2. The Domain Names and Registrar

The domain name at issue is <staten-generaal.com>. The Registrar is Network

Solutions Inc., of Herndon, Virginia, U.S.A. ("the Registrar").

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name Dispute

Resolution Policy ("the Policy") adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999, in accordance

with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules")

and the Supplemental Rules for the Policy ("the Supplemental Rules")

of the WIPO Arbitration and Mediation Center ("the Center").

The Complaint was received by the Center on April 12, 2001 (electronically)

and April 10, 2001 (hard copy). The Complainant requested a three-member

panel.

On April 12, 2001, the Center sought registration details from the Registrar.

On April 17, 2001, the Registrar advised that the registrant of the

disputed domain name, and the Administrative and Billing Contact is the Respondent.

The Registrar’s 5.0 Service Agreement is in effect (which incorporates the Policy

and requires the registrant to submit to a properly initiated complaint under

the Policy); the status of the disputed domain name is "active".

On April 23, 2001, the Center satisfied itself that the Complainant had

complied with all formal requirements, including payment of the prescribed fee.

It formally notified the Respondent by post/courier, facsimile and email of

the amended Complaint and of the commencement of this administrative proceeding

and sent copies to the Complainant, the Registrar and ICANN.

The formal date of the commencement of the proceeding was accordingly April 23, 2001.

The last day specified in the notice for a Response was May 12, 2001.

No Response was filed and a Notice of Default was sent by the Center to the

Respondent on May 14, 2001.

On May 21, 2001, the Center notified the parties of the appointment of

the Panel, all three members having submitted a Statement of Acceptance and

Declaration of Impartiality. The Center nominated June 3, 2001 as the date

by which, absent exceptional circumstances, the Panel is required to forward

its decision to the Center.

The language of the proceeding is English.

The Panel is satisfied that the Complaint was filed in accordance with the

requirements of the Rules; payment was properly made; the Panel agrees with

the Center’s assessment concerning the Complaint’s compliance with paragraph

2(a) of the Rules; and that the three member administrative panel was properly

constituted.

4. Factual Background

The Staten-Generaal (i.e. in English, States General) was the body of delegates

representing the United Provinces of the Netherlands and was instituted in the

15th century. During the secession war of the Netherlands against

Spanish rule (1568-1609) the Staten-Generaal became the central organ of a general

Netherlands union. Under the authority of the Staten-Generaal, a Dutch coastal

battery gave the first official salute by a sovereign state to the flag of the

United States of America. The term Staten-Generaal was revived for the bicameral

parliament of the Kingdom of the Netherlands established by the Constitution

of 1814 (cf. Chapter 3, § 1, articles 50 and 51 et seq. of the

Constitution of the Kingdom of the Netherlands) and is still in use as such.

The term "Staten-Generaal" has achieved broad recognition and use

within the Netherlands – among the general public, scholars, journalists and

others – as referring exclusively to the Complainant’s parliament. In the mind

of the Dutch public, the name "Staten-Generaal" has become synonymous

with the country’s bicameral parliament. There likewise appears to be significant

international recognition and use of the term in the same regard, albeit naturally

to a lesser extent than within the Netherlands. From this it follows that the

name "Staten-Generaal" has achieved a sufficient secondary meaning

or association with the Dutch parliament such that the Complainant can be viewed

as having legally protectable rights in the name.

The Respondent, which is incorporated in a non-Dutch speaking area of the world,

has offered the domain name <staten-generaal.com> for sale at an unspecified

price. Complainant asserts that the Respondent has offered other similar Dutch-language

names for sale, although it has neglected to provide proof in this regard.

The Respondent has made no substantive response to the Complainant’s allegations,

despite being properly served with the Complaint. However, on May 14, 2001,

the date that the Notice of Default was issued by the Center, an individual

named Danny Oberman, who identified himself as a Vice-President of the

Respondent, sent an email to the Center as follows:

"As I told Boukema [Complainant’s counsel], I have no problem transferring

him the name at no charge. Only problem is that it is frozen with NSI.

If he wants to go through a legal process, which will enable him to bill extra

hours that’s fine with me, but please be advised that we do not reject the claim,

and are willing to transfer the domain name immediately."

Notwithstanding this email, the Complainant has not withdrawn the Complaint

and the domain name has not been transferred as far as the Panel is aware.

5. Parties’ Contentions

Complainant:

The entirety of the Complainant’s common law mark Staten-Generaal is included

in the domain name <staten-generaal.com>. The addition of ".com"

is required for registration of a domain name and is non-distinctive.

The domain name <staten-generaal.com> is registered in bad faith and

the Respondent has no legitimate interest in it.

- The Respondent is a legal entity residing in a non-Dutch language area. The

uniquely Dutch mark Staten-Generaal does not serve a reasonable or legitimate

purpose for the Respondent, a United States company.

The Respondent has been, and still is, offering the domain name staten-generaal.com

for sale (together with other names belonging in the Dutch public domain).

- The Respondent’s express purpose to sell the domain name staten-generaal.com

for valuable consideration in excess of the Respondent’s out-of-pocket costs

directly related to the domain name, plus the fact that the Respondent offers

a multitude of other domain names in Dutch, show that the domain name staten-generaal.com

has been registered and is being used in bad faith.

The domain name staten-generaal.com suggests an association with or relationship

to, or perhaps endorsement of, the site by the Staten-Generaal. This domain

name confuses and misleads users of the internet in the search of information

about the Complainant. Even a disclaimer on the website is not suffice to neutralize

or redress confusion which has occurred.

The Respondent’s registration of the name thwarts the rights of the Complainant

to make government and state information as much as possible available to the

public and the public’s right to seek information from government and the state.

It also limits the public’s right to address its views to government. The Respondent’s

registration also limits the Complainant’s opportunities to encourage and put

e-government into practice.

It is alleged that in the past the Respondent used the domain name <staten-generaal.org>

for a pornographic site. This is improper and gives cause for grave concern,

as regards likelihood of confusion, loss of reputation and misleading the public.

The proximity of that domain name to the domain name in issue gives the Complainant

further cause for concern.

The domain name <staten-generaal.com> can only be used in good faith

by the Staten-Generaal and no one else. As indicated above, the reputation of

the Staten-Generaal is vested in the eponymous name by which the Complainant

is commonly known even whilst the Complainant has acquired no trademark or service

mark rights. As such marks are by definition marks under which the goods or

service by an undertaking are being traded, the Staten-Generaal which is

the bicameral parliament of the Kingdom of the Netherlands, cannot register

a trademark or service mark as it is by definition not an undertaking.

The Complainant contends that Dutch law applies to this case, at least by analogy,

and asserts that "Dutch courts have repeatedly held that the use of a domain

name similar to an institute of the Complainant (e.g. staten-generaal.nl; tweedekamer.nl)

constitutes a tort vis-à-vis the Complainant" (Complaint p. 7)

(the "tweede kamer" being the lower house of the Dutch parliament).

The Panel notes, however, that in a decision rendered on August 3, 2000,

in a case involving the name <tweedekamer.com>, a Dutch court denied relief

on the ground that no tort was committed where the registered name had the "com"

designation as opposed to the "nl" designation. Given that the claimant

in that case was the Dutch State, and that the lawyer was the same counsel as

in the present case, the Panel finds it most surprising that counsel failed

to disclose this apparently contrary Dutch precedent.

The Respondent has made no submissions other than the email noted above.

6. Discussion and Findings

To qualify for cancellation or transfer, a complainant must prove each element

of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the

domain name; and

(iii) the disputed domain name has been registered and is being used in bad

faith.

The Respondent’s email of May 14, 2001, quoted above, constitutes a concession

that arguably provides a sufficient basis for resolving this case without the

necessity to make any further factual findings. See Juventus F.C. S.p.a.

v. Sergio Bragança, Case No. D2000-1466

(WIPO December 20, 2000); United Advertising Publications, Inc. v. Net

Marketing, Case No. D2000-0058 (WIPO

March 31, 2000); Phoenix Technologies Ltd. v. Phoenix Global Networks,

Inc., Case No. D2000-0319 (WIPO June

16, 2000). However, in light of the fact that the domain name has not been

transferred and in the interest of reaching a definitive resolution in this

matter, the Panel deems it prudent to proceed to make findings on the merits

of the case.

Identical Mark

The Panel considers that the disputed domain name is identical to the mark

of the Complainant. The addition of the designation ".com" to the

domain name is insufficient to make the domain name non-identical.

Illegitimacy

Paragraph 4(c) of the Policy sets out, without limitation, circumstances which,

if proved, establish the registrant’s rights or legitimate interests to the

disputed domain names. The Complainant has the onus of proof on this, as

on all issues. The Complainant has not given the Respondent any rights to use

the disputed domain name.

The critical question is whether the Respondent was aware of the Complainant’s

mark before it registered the domain name. The Panel notes that the Respondent

is incorporated in a non-Dutch speaking area and that it has alleged neither

absence of knowledge of the Complainant’s mark nor any legitimate interest in

using the name. The Complainant asserts that the Respondent has registered

many names with a Dutch connection and seeks to sell these names, including

the subject name. Again, in the absence of a Response, the Panel can assume

that this is not denied by the Respondent. The Complainant’s mark as representing

the Dutch state is reasonably well-known throughout the world. In the absence

of any suggestion to the contrary, the Panel infers that the Respondent was

aware of the Complainant’s mark when it registered the name.

Bad Faith

Although presenting a somewhat close question, the Panel considers that the

domain name was registered and is being used in bad faith. The Panel has already

concluded that the Respondent knew of the Complainant’s mark at the time of

registration.

The Panel concludes under all the circumstances of this case – including the

Respondent’s attempt to sell the domain name, its lack of any apparent legitimate

interest in the name, the fact that it is incorporated in a non-Dutch speaking

region and the Complainant’s unrebutted allegation that the Respondent has registered

and attempted to sell other official Dutch-language names – that the bad faith

criterion is satisfied here.

7. Decision

The Panel determines that:

(a) The disputed domain name is identical to the Complainant’s mark.

(b) The Respondent has no rights or legitimate interests in respect of the

domain name.

(c) The disputed domain name has been registered and is being used in bad faith.

The Registrar is required to transfer the domain name <staten-generaal.com>

to the Complainant.

Hon. Sir Ian Barker QC

Presiding Panelist

David C.L. Perkins

Panelist

D. Brian King

Panelist

Dated: June 3, 2001

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